DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Applicant’s claim to foreign priority in application no. JP2021-071673, filed April 21, 2021, is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1, and dependent Claim 2-4, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, it is unclear what is meant by the recited ranges including the language ‘not inclusive’. For example, the Mo range is recited as 0.6% (not inclusive) to 1.4% (not inclusive). It is unclear what the claimed range is, and whether values between 0.6-1.4 are included in the range. The Examiner interprets the ‘not inclusive’ language to mean that a range must be greater or less than the specified value. For example, the Examiner interprets 0.6% (not inclusive) to 1.4% (not inclusive) to mean a range which is greater than 0.6% and less than 1.4%.
Regarding Claim 3 and Claim 4, it is unclear what is meant by the recited range 0 (not inclusive) to 50C. It is unclear what the claimed range is, and whether values between 0 and 50C are still included in the range. Examiner interprets the claim to mean wherein the cooling stop temperature is greater than 0C and 50C or less.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Tomio (cited by Applicant in IDS filed October 5, 2023, JP 2017031493 A, English Machine Translation provided).
Regarding Claim 1, Tomio discloses a stainless steel pipe (Abstract), having a chemical composition comprising, by mass%:
Element
Claim 1
Tomio (Abstract)
Overlap
C
0-0.05
0-0.06
0-0.05
Si
0-1.0
0-1.0
0-1.0
Mn
0.1-2.0
0.05-2.0
0.1-2.0
P
0-0.05
0-0.05
0-0.05
S
0-0.005
0-0.005
0-0.005
Cr
>16 to 20*
15.5-18
>16-18
Mo
>0.6 to <1.4*
1-3.5
1 to <1.4
Ni
3 to <5*
2.5-7
3 to <5
Al
0.001-0.10
0.001-0.1
0.001-0.10
N
0.010-0.100
0-0.06
0.01-0.06
O
0-0.01
0-0.01
0-0.01
Cu
0.3-3.5
0.2-3.5
0.3-3.5
Balance
Fe + impurities
Fe + impurities
Fe + impurities
* see 112b rejection above
Tomio further satisfies the claimed relational expressions (1) and (2), wherein:
Cr+0.65*Ni+0.6*(Mo+0.5*W)+0.55*Cu-20*C ≥ 21.7 (1)
Cr+3.3*(Mo+0.5*W)-17*C ≥ 21.0 (2)
For example, the invention of Tomio includes a stainless steel pipe comprising 17% Cr, 4% Ni, 1.2% Mo, 1.5% W (see para. [0052] of Tomio), 2% Cu and 0.005% C, which equates to a value according to expression (1) of 21.8, which reads on the claimed greater than or equal to 21.7, and a value according to expression (2) of 23.4, which also reads on the claimed greater than or equal to 21.0.
Tomio further discloses:
a microstructure including, in terms of volume fraction, 10-55% ferrite, 0-15% retained austenite and a balance of tempered martensite, which reads on the claimed 20-40% ferrite, 5-25% retained austenite and 45% or more tempered martensite (para. [0081], martensite would be 30-90%, which reads on 45% or more; one of ordinary skill in the art would appreciate the martensite to be tempered martensite (not fresh martensite) – see para. [0065]), and
a yield strength of 758MPa or higher (para. [0080]), and
an absorbed energy at a temperature of -10C vE-10 of 80J or more, which reads on the claimed 40J or more (para. [0094]; see also Table 2 values; one of ordinary skill in the art would appreciate these values (inventive examples 1-2, 4-5, 10-11, 13-14, 16-17 and 19-20 which range from 145-178J, to be representative of the invention of Tomio).
Additionally, one of ordinary skill in the art would appreciate the invention of Tomio to comprise the claimed absorbed energy because the composition of Tomio (see above and Claim 2) is the same as claimed, and the method of Tomio (see Claims 3-4 below), is the same as claimed. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Regarding the compositional and microstructural ranges, the yields strength, and the absorbed energy, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 2, Tomio further discloses wherein the chemical composition further comprises, by mass%, at least one selected from group A to group E:
Group A
Tomio
citation
overlap
At least one of:
0-0.3% Ti
0-0.5% Nb
0-0.30% Nb
[0049]
0-0.3%
0-0.5% V
0-0.20% V
[0049]
0-0.20%
0-0.5% Ta
Group B
At least one of:
0-0.005% B
0-0.005% Ca
0-0.01% Ca
[0053]
0-0.005%
0-0.01% REM
0-0.1% REM
[0053]
0-0.01%
Group C
At least one of:
0-0.01% Mg
0-0.01% Mg
[0053]
0-0.01%
0-0.2% Zr
Group D
At least one of:
0-0.2% Sn
0-0.2% Sb
Group E
At least one of:
0-1.0% Co
0-3.0% W
0-3.0% W
[0052]
0-3.0%
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 3 and Claim 4, Tomio discloses a method for manufacturing the steel pipe of Claim 1 (Abstract), the method comprising:
heating a steel pipe material to a heating temperature of 1150-1250C, which reads on the claimed range of 1100-1350C, performing hot working on the heated material to obtain a seamless steel pipe having a predetermined shape (para. [0035]; para. [0087], hot working at 850-1250C; para. [0059], heating to 1150-1250C; hollow shell reads on seamless pipe),
performing a quenching treatment of reheating the seamless pipe after the hot working to a temperature of 850-1050C, which reads on the claimed 850-1150C, and cooling to a stop temperature of 60C or lower, preferably 30C or lower, which reads on the claimed range of greater than 0C (see 112b rejection above) to 50C in terms of surface temperature, and cooling by water cooling, which reads on the claimed cooling rate equal to or higher than a cooling rate corresponding to natural cooling (para. [0063]-[0063]), and
performing a tempering treatment of heating the quenched steel pipe to a tempering temperature of 500-650C (para. [0065]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached Monday - Friday 9:00-4:00 MT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/ Examiner, Art Unit 1735
/KEITH WALKER/ Supervisory Patent Examiner, Art Unit 1735